IP News

In February 2014, the Appellate Court of Prishtina ruled in favor of German pharmaceutical company Bayer AG in a trademark infringement lawsuit against a local Kosovo pharmacy operating under the name DPF Bayer. The Appellate Court’s decision is final and not subject to appeal.

In March 2011, Bayer AG initiated the lawsuit at the Commercial Court in Prishtina (now Basic Court of Prishtina, Department of Commercial Matters) arguing that the defendant’s use of the mark Bayer as a trade name and a service mark constituted trademark infringement. Bayer AG also filed a separate claim on the basis of infringement of a well-known trademark.

At the time of filing the lawsuit, Bayer AG held several international registrations extended to former Yugoslavia and/or Serbia, which were subsequently re-registered in Kosovo during the revalidation period.

The defendant argued that the plaintiff had no capacity to sue because the plaintiff had no business registration in Kosovo, i.e. the defendant did not make a distinction between a trademark registration and a business registration.

The defendant also referred to the Article 14.3 of the (now former) Law on Trademarks, according to which no infringement proceedings may be initiated before the date of publication of trademark registration, i.e. the revalidation procedure for Bayer AG’s international registrations had not been completed before Kosovo’s PTO at the time Bayer AG filed the lawsuit. However, the court permitted Bayer AG to file the lawsuit because of Bayer AG’s international registration with WIPO.

Furthermore, the defendant argued that the plaintiff had acquiesced in the defendant’s use of its trademark claiming that Bayer AG had not opposed the use of its mark for more than five successive years.

In June 2011, the Commercial Court ruled that although the plaintiff had the capacity to sue and is entitled to trademark protection under Kosovo’s trademark law, the plaintiff cannot ask the defendant to cease using the mark because, as per Article 49 of the Law on Trademarks no. 02/L-54 (now repealed), the plaintiff tacitly approved the defendant’s use of the mark. The court did not provide any further details as to why the conditions laid down by Article 49 were considered relevant in the dispute.

The Appellate Court canceled the decision of the Commercial Court stating that the Article 49 applies only to cases where the plaintiff acquiesced to the use of the trademark – not the trade name. For that reason, the Appellate Court ruled that the first-instance court should not have accepted the defendant’s acquiescence defense in this case. In other words, the pharmacy was registered according to the Law on Business Organizations, which makes the Article 49 of the Law on Trademarks inapplicable to this case.

By: Florentina Grubi

For more information, please contact Florentina Grubi.

Kosovo has recently drafted amendments to its trademark and patent laws, which the Kosovo Parliament is expected to adopt this year.

The amendments aim to bring Kosovo’s IP legislation in line with European Union’s directives, as one of the requirements for EU integration, as well as create a better and safer environment for investments and the protection of IP rights.

The draft amendments are available in Albanian, Serbian and English at this web page. The public’s comments and opinions will be accepted until May 28 via this email address.

We will provide a detailed analysis of the amendments as soon as the final drafts of the laws amending and supplementing the trademark and patent laws become available.

For more information, please contact Nora Makolli.

Further to the entry into force of the Law on Geographical Indications (GIs) and Designations of Origin (DOs) on July 19, 2013, the Ministry of Trade and Industry approved the Administrative Instruction no. 05/2014 on registration procedure for the GIs and DOs and the Administrative Instruction no. 04/2014 on official fees for the registration of GIs and DOs. The administrative instructions entered into force on January 30, 2014.

The Administrative Instruction no. 05/2014 provides detailed information on the procedures prescribed by the law, namely the procedures of application, registration, publication, recordal of changes, renewal, termination of validity, etc.

The interested parties are now able to apply for the registration of their GIs or DOs with the Kosovo IP Agency, responsible for the registration procedure.

The administrative instructions are available in English on the Ministry of Trade and Industry’s website.

Prepared by: Florentina Grubi

For more information, please contact Florentina Grubi.
 

The new Law on Geographical Indications (GIs) and Designations of Origin (DOs) entered into force in Kosovo on July 19, 2013.

According to the new law, GIs can be registered at Kosovo’s IPO. Any GI in the name of a region, a specific place or in special cases the name of a state, which is used to describe a specific product originating from that region or state can be registered.

Registered GIs or DOs will be protected against any direct or indirect commercial use of products that are not registered, any misuse, imitation or infringement, each inaccurate (false) or misleading indication in terms of genealogy, origin, nature or essential qualities of the product, and every other practice or action that may mislead the consumer as to the true origin of the product.

Legal protection of GIs and DOs as foreseen by the new law covers several actions, including the procedure of finding and stopping the infringement, the application for the seizure and destruction of products, and the application for damage compensation. Moreover, the law includes penalty provisions including monetary fines in various amounts depending on different categories.

The full text of the law is available in English at this link.

For more information, please contact Florentina Grubi.

The new Kosovo law on consumer protection that entered into force in November 2012 introduced provisions on comparative and misleading advertising.

The new law defines misleading commercial practices and lays down the conditions under which comparative advertising is permitted. If the prescribed conditions are contravened, interested parties can file a complaint with the Ministry of Trade and Industry Inspectorate or other inspection bodies. The competent authority may prohibit comparative and misleading advertising through an ordinance and the costs of the broadcaster will be borne by the advertising sponsor.

The publisher of the advertising is required to submit evidence confirming the accuracy of the factual claims contained in the contested advertisement within seven days of receiving the ordinance. Failure to do so will be taken to mean that the advertising is misleading, questionable and inaccurate. No further consequences have been defined by the law.

By: Florentina Grubi

For more information, please contact Florentina Grubi.

Source: The text of the law